Ex Parte Evans

Patent Trial and Appeal Board

Oct 14, 2016

13269810 (P.T.A.B. Oct. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/269,810 10/10/2011 DANIEL D. EV ANS
11964 7590 10/18/2016
Shaddock Law Group, PC
638 Independence Parkway
Suite 240
Chesapeake, VA 23320
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
10339.0617 1158
EXAMINER
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
10/18/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
peter@shaddock-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte DANIEL D. EVANS
Appeal2014-008342
Application 13/269,810
Technology Center 3700
Before JENNIFERD. BAHR, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel D. Evans (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-008342
Application 13/269,810
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A cover for an optical device having an eye piece and an image
receiving lens, comprising:
and
a first portion configured to attach to the optical device;
a second portion comprising:
a first lens cover coupled to the first portion at a first
end of the second portion; and
a second lens cover coupled to the first lens cover,
wherein the second portion is coupled to the first portion
only at the first end of the second portion.
REJECTIONS
I. Claims 1, 3-7, and 9 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Campisi (US 3,782,614, iss. Jan. 1, 1974).
II. Claims 2 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Campisi and Smithbaker (US 6,095,328, iss.
Aug. 1, 2000).
III. Claim 10 stands rejected under 35 U.S.C. § 102(e) as anticipated
by Arman (US D601,341 S, iss. Oct. 6, 2009).
IV. Claims 12-15 and 17-20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Arman and Smithbaker.
V. Claims 11 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arman, or Arman and Smithbaker, further in
view of Alwitt (US 5,101,974, iss. Apr. 7, 1992).
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Appeal2014-008342
Application 13/269,810
DISCUSSION
Rejection I
In reading claim 1 on the structure of Campisi, the Examiner finds
that Campisi' s flap member 4 is "a first portion ( 4) configured to attached
[sic] to the optical device." Final Act. 2. Appellant argues that "flap 4 is not
configured to attach to the optical device," as required in claim 1, but rather,
"merely covers the body 3" and "is simply acting as a lid." Appeal Br. 9.
In response, the Examiner states that "Campisi discloses first portion
(4) inherently capable to attach to an optical device." Ans. 9. According to
the Examiner, "any optical device with a size of the inner perimeter between
the first portion and portion (3) of Campisi would be capable to fit and
attach to that first portion (4)," and "[w]hen the first portion (4) is engaged
to the portion (3) of the cover, the first portion (4) would be attached to the
optical device, an optical device that fit[ s] tightly in the bag by the first
portion (4)." Id.
For the reasons set forth by Appellant on pages 2 and 3 of the Reply
Brief, the Examiner fails to establish, by a preponderance of the evidence,
that Campisi' s flap member 4 is "configured to attach to" an optical device,
as required in claim 1. As Appellant points out, "claim 1 requires the first
portion to be configured to attach to the optical device, not 'first and second
portions cooperatively configured to attach to the optical device."' Reply
Br. 3. We agree with Appellant that Campisi's binocular pocket, defined
primarily by body member 3 and closed off by flap member 4, being capable
of receiving an appropriately sized pair of binoculars therein does not equate
to flap member 4 being configured to attach to the pair of binoculars.
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Appeal2014-008342
Application 13/269,810
Accordingly, we do not sustain the rejection of claim 1, or its
dependent claims 3-7 and 9, as anticipated by Campisi.
Rejection II
In this rejection, the Examiner relies on the same purported findings
regarding Campisi, and does not articulate any additional findings or
reasoning, or rely on any teachings of Smithbaker, that would remedy the
aforementioned deficiency in the Examiner's findings with respect to
Campisi. Final Act. 5. Accordingly, we do not sustain the rejection of
claims 2 and 8 as unpatentable over Campisi and Smithbaker.
Re} ection III
The annotated excerpt from Arman's Figure 1 on page 4 of the Final
Action illustrates how the Examiner reads the "sleeve," "first end," and
"second end" of claim 10 on Arman's binocular case. The Examiner's
annotated version of Arman's Figure 1 is reproduced below:
) ~-~ :~~~'\-j'.
'\ .~
The annotated version of Arman's Figure 1 is a perspective view of a
binocular case in use, with a sleeve encasing the housing of the binoculars
identified as "sleeve or cylinder," a first cup-shaped lens cover, identified as
"1st end," attached to and hanging downwardly from the sleeve proximate
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Application 13/269,810
the receiving lenses of the binoculars to expose the receiving lenses, and a
second cup-shaped lens cover, identified as "2nd end," attached to and
hanging downwardly from the sleeve proximate the eye lenses to expose the
eye lenses.
Appellant contends that the Examiner errs in finding that Arman
discloses
"a second portion comprising a first end coupled to the
first portion and configured to encase the first pair of lenses and
a second end coupled to the first end and configured to encase
the second pair of lenses, wherein the second portion is attached
to the first portion only at the first end,"
as called for in claim 10. Appeal Br. 11; see id. at 20 (Claims App.).
Appellant submits that Arman "merely shows a sleeve/cylinder and a pair of
lens covers, both of which are attached to the sleeve/cylinder and not to one
another." Id. at 11.
In response, the Examiner "points out that the first end and the second
end are coupled/link or in contact with each other when the first and second
ends are in a closed position as shown in Figs. 4-6." Ans. 10. To illustrate
this point, the Examiner provides an annotated version of Arman's Figure 5.
Id. The Examiner's annotated version of Arman's Figure 5 is reproduced
below:
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Appeal2014-008342
Application 13/269,810
The Examiner's annotated version of Arman's Figure 5 is an
elevational view of the binocular case, with the lens covers identified by the
Examiner as "1st end" and "2nd end" appearing to abut each other at a point
along the sleeve identified by the Examiner as "coupling."
Appellant asserts, and we agree, that Figure 5, in fact, illustrates only
that the two lens covers, on which the Examiner reads the claimed "first
end" and "second end," are "two separate elements that might touch each
other," not that they are "actually coupled" (or attached) to one another.
Reply Br. 6. Arman's Figure 1 depicts the lens covers corresponding to the
"first end" and "second end" each independently coupled to the "sleeve"
portion of the cover. Thus, we agree with Appellant that these lens covers
do not form a "second portion" comprising a first end and a second end
coupled to one another, "wherein the second portion is attached to the first
portion only at the first end," as required in claim 10. Appeal Br. 20 (Claims
App.) (emphasis added).
Accordingly, we do not sustain the rejection of claim 10 as anticipated
by Arman.
Re} ections III and IV
In rejecting claims 11-13, which depend from claim 10, the Examiner
relies on the same purported findings regarding Arman, and does not
articulate any additional findings or reasoning, or rely on any teachings of
Smithbaker or Alwitt, that would remedy the aforementioned deficiency in
the Examiner's findings with respect to Arman. Final Act. 5---6, 8.
Accordingly, we also do not sustain the rejection of claims 12 and 13 as
unpatentable over Arman and Smithbaker, or the rejection of claim 11 as
unpatentable over Arman, Smithbaker, and Alwitt.
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Application 13/269,810
Claim 14 contains limitations similar to those in claim 10 addressed
above. In particular, claim 14 recites "a body comprising: a first end
coupled to the cylinder ... and a second end coupled to the first end ... ,
wherein the body is coupled to the cylinder only at the first end." Appeal
Br. 21. In rejecting claim 14, as well as claims 15-20, which depend from
claim 14, the Examiner relies on the same purported findings regarding
Arman, and does not articulate any additional findings or reasoning, or rely
on any teachings of Smithbaker or Alwitt, that would remedy the
aforementioned deficiency in the Examiner's findings with respect to
Arman. Final Act. 6-8. Accordingly, we also do not sustain the rejection of
claims 14, 15, and 17-20 as unpatentable over Arman and Smithbaker, or
the rejection of claim 16 as unpatentable over Arman, Smithbaker, and
Alwitt.
DECISION
The Examiner's decision rejecting claims 1-20 is reversed.
REVERSED
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